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  • Henry Park

Submarine trademarks?

If you file an intent-to-use trademark application, then you had best make real attempts to use the mark in commerce. Otherwise, your mark could be canceled.

Social Tech filed an intent-to-use trademark application for MEMOJI and began some basic efforts to use the mark but did not make any public announcements (Social Technologies LLC v. Apple Inc., No. 20-15241 (Ninth Cir. Ct. Appeals, July 13, 2021). Once Apple acquired the rights to MEMOJI from a third-party, Social Tech hurriedly developed an application and then filed a Statement of Use (SOU) swearing it had bona-fide use of the mark in commerce. The district court and the court of appeals found that there was not bona fide use of the mark, but rather used "made merely to reserve a right in the mark" and not for "genuine commercial reasons". And, therefore the district canceled the trademark registration.

Image by Engin Akyurt from Pixabay


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